EPC 2000

In 2000 a diplomatic conference of the European Patent Organisation’s member states revised the European Patent Convention. Greece’s ratification of the revised Convention on 13 December 2005 initiated the two-year period for its entry into force, meaning that it will become effective on 13 December 2007 at the latest. The revision brings the Convention into line with recent developments in international patent law and enables it to meet the needs of European industry today.

Member states

In June, the strategy debate with the Organisation’s member states was brought to a successful conclusion on essential issues, with a decision to set up a European Patent Network (EPN) based around five key elements. One of these is a pilot project on the utilisation of national search reports by the EPO, involving users and the Austrian, Danish, German and UK patent offices and designed to gather information about the potential for efficiency gains and for reducing work duplication. Other elements are a common European quality system, and a service consortium of national patent offices interested in taking over non-core work from the Office, such as special and standard searches and technical translations. There was also agreement on a new and improved policy of technical cooperation between the Office and the member states, and the Board of the Administrative Council was mandated to conduct a study on future workload.

On 1 December 2006, the Government of the Republic of Malta deposited its instrument of accession to the EPC and to the EPC 2000. The EPC accordingly entered into force for Malta on 1 March 2007. Since then, the European Patent Organisation has had 32 member states, and the European patent system has been the gateway to patent protection in a total of 37 countries, including five extension states.

With a view to further improving and harmonising search cooperation with Belgium, France, Luxembourg, the Netherlands and Turkey as former members of the International Patent Institute (IIB), the respective working agreements now provide for the search report to be accompanied by a written opinion on the invention’s patentability. Thus search reports established by the Office on national applications of ex-IIB member states are fully in line with the international standard as prescribed by the PCT. This is a big step towards more efficiency and cost reduction in the patent system.

Candidate states

A number of other countries – Croatia, Norway and the former Yugoslav Republic of Macedonia – have indicated their intention to proceed to EPC ratification soon, so a further enlargement of the European Patent Organisation is likely in the foreseeable future.

Developments in the European patent system

Most of those who took part in the European Commission’s process of consultation on future European patent policy identified enactment of the European Patent Litigation Agreement (EPLA) as a clear priority. Within the European Union (EU) there seems to be full agreement that the EPLA should as far as possible be compatible with the future Community patent; but the issue of how this goal is to be achieved remains unresolved. Some member states want the EPLA to be adapted only to the extent needed to enable the EU to accede to the Convention, while others prefer the idea of making the EPLA a Community instrument.

Three more member states – the Netherlands, Switzerland and Liechtenstein – have now ratified the London Agreement on the application of Article 65 EPC, bringing the total number of ratifications to nine. To enter into force, the agreement still needs to be ratified by France, where the issue was hotly debated throughout the year, the most significant moments being the approving reports of the National Assembly and the Senate, the favourable decision of the Constitutional Council, and the European Commission’s declaration of support for the London Agreement.

EC-funded activities

In the Western Balkans, implementation of the EU-funded Community Assistance for Reconstruction, Development and Stabilisation (CARDS) projects continued, focusing on modernisation of the infrastructure of the region’s patent offices and on the grant procedure.

The EC-ASEAN Intellectual Property Rights Cooperation Programme continued its successful implementation with around a hundred activities, highlights being a regional seminar on geographical indications and the publication of Thai case law from both the IP division of the Supreme Court and the IP Court itself.

Trilateral cooperation

The EPO, the JPO and the USPTO moved from cooperation based purely on technical projects to one which is strategically oriented and aimed at improving the efficiency of patenting procedures worldwide.

The Memorandum of Understanding signed at the annual Trilateral Conference held in Tokyo in November focuses on improving quality, harmonising patent practice, increasing the use of work done by other Trilateral Offices and strengthening the PCT.

Significant progress was made on the development of a common patent application format which could be used in any of the Trilateral Offices.

Bilateral projects

A series of training workshops was held in Kiev for Russian and Ukrainian examiners, followed by a period of extended training. Dispute representatives from Russia and the Ukraine took part in a study visit to the Centre for Effective Dispute Resolution and learned how IP dispute resolution is handled in the UK.

The highlight of the traditionally close cooperation between the EPO and China’s State Intellectual Property Office (SIPO) was the inclusion of the Chinese Traditional Medicine database in the strategic search tool for examiners. In addition, the quantity and quality of database exchanges were significantly enhanced. Other interesting projects launched or continued during 2006 include automatic translation tools, a China IP information helpdesk and the Mandarin interface to the World Patent Finder (esp@cenet).

In October an agreement was signed to strengthen bilateral cooperation between the EPO and the Korean Patent Office (KIPO). The agreement provides for the joint development of projects in the fields of database exchange, automatic translation tools and patent information services, and for KIPO to test the strategic search tool for examiners.

The Office and the Intellectual Property Office of Singapore coorganised a conference of Heads of IP Offices concurrently with the fourth Europe-Asia Patent Information Conference. These events have developed into leading fora for patents in Asia.

The first Memorandum of Understanding on bilateral cooperation was signed with India, paving the way to enhanced cooperation with this major country. In January 2006 another Memorandum of Understanding was signed between the EPO and the Mexican Patent Office; Mexico wants to become a full user of the strategic search tool for examiners, and as a result the test system was implemented.

Contacts were reinitiated with the South African Patent Office, and a programme of bilateral cooperation is envisaged for 2007.

Technical support

In 2006, the Brazilian Patent Office acquired and implemented full access to the strategic search tool for 145 examiners, a number that is due to increase soon following the recruitment of 250 new examiners.

The Latin American patent documents database significantly improved its coverage (fourteen participating countries and 550 000 bibliographic data records), and it had over one and a half million visitors in the course of the year.

Major progress was made on the project with the Mexican and Spanish Patent Offices and WIPO, setting up a centre in Mexico to carry out prior art searches for the patent offices of the Central American countries.

The EPO is supporting the IP training centre of the African Regional Intellectual Property Office in Harare by providing seminars and events relating to traditional knowledge, with the aim of setting up an African database on traditional knowledge for search and examination.

International harmonisation

Working Group I of Group B+, made up of the industrialised countries which are members of the WIPO Standing Committee on the Law of Patents along with the EU and the EPO, met in Tokyo in March 2006 to discuss the first-to-file principle, the grace period, novelty and inventive step. In mid-July, the chair issued a compromise proposal on these issues, which was found to form a good basis for further discussion at a Group B+ Plenary Meeting in Geneva in September.

The delegations all conducted intensified user consultations in time for a further meeting in Tokyo in November, but failed to reach agreement. It was decided that the working group’s drafting committee would take up various points raised at the November meeting and that the chair would conduct informal consultations, with a view to preparing the next meeting, scheduled for May-June 2007.